Bobosky et al v. adidas AG et al
Filing
181
OPINION & ORDER: Granting in Part and Denying in Part Defendants' Motion for Partial Summary Judgment 138 ). Although Bobosky's federal trademark registrations are void ab initio, there remains a genuine issue of material fact concerning whether Bobosky has established valid rights in WE NOT ME as an unregistered trademark through use of the mark on shirts and hats to identify their secondary source. Signed on 12/29/11 by Magistrate Judge Paul Papak. (gm)
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF OREGON
W. BRAND BOBOSKY, and WE NOT ME,
LTD.,
Plaintiff,
CV IO-630-PK
OPINION AND ORDER
v.
ADIDAS AG d/b/a THE ADIDAS GROUP,
ADIDAS AMERICA, INC., I80LA, LLC,
NBA PROPERTIES, INC., NBA MEDIA
VENTURES, LLC, BANNER SEVENTEEN
LLC d/b/a THE BOSTON CELTICS, and
KEVIN GARNET
Defendants.
PAPAK, Judge:
Plaintiffs W. Brand Bobosky and We Not Me, Ltd. (collectively "Bobosky" or
"plaintiffs") bring this action against defendants adidas America, Inc., adidas AG, I80LA, LLC,
NBA Properties, Inc., NBA Media Ventnres, LLC, and Kevin Gamett (collectively "adidas" or
"defendants") arising ont of defendants' use of the phrase "WE NOT ME" dnring a 2007
Page 1- OPINION AND ORDER
"Basketball is a Brotherhood" marketing campaign. Bobosky alleges claims for trademark
infringement and unfair competition, based on his two federal trademark registrations of "WE
NOT ME." (Third Amend. Compl., #101.) Now before the court is adidas' motion for pattial
summary judgment (#138) on the issue of trademark validity. For the reasons discussed below,
the motion is granted in part and denied in part.
BACKGROUND'
I.
Genesis and Promotion of WE NOT ME
W. Brand Bobosky is an attorney in private practice in Naperville, Illinois. (Bobosky
Decl., #168-1,
~2.)
In 2000, Bobosky came up with the idea of "WE NOT ME" and in June of
that year placed the phrase and a corresponding symbol on 200 lapel pins, which he distributed at
his induction as the Naperville Rotarian President. Id. at ~6. Over the next 11 years, promoting
"WE NOT ME" became Bobosky's "life passion." Id. at ~5. Bobosky initially engaged in
various attempts to bring the phrase to public attention by distributing items displaying the
, The following recitation constitutes my construal of the evidentiary record in light ofthe
legal standard governing motions for summaty judgment under Federal Civil Procedure Rule 56.
That is, in construing the record I view the evidence and all factual inferences drawn from the
underlying facts in the light most favorable to the non-moving party, for purposes of the motion
now before the court only. See, e.g., T. W. Electrical Service, Inc. v. Pacific Electrical
Contractors Asso., 809 F.2d 626,630-631 (9th Cil'. 1987) ("[A]t summary judgment, the judge
must view the evidence in the light most favorable to the nonmoving party: if direct evidence
produced by the moving patty conflicts with direct evidence produced by the nonmoving party,
the judge must assume the truth of the evidence set fmth by the nonmoving party with respect to
that fact. ... Inferences must also be drawn in the light most favorable to the nonmoving party.
Inferences may be drawn from underlying facts that are not in dispute, such as background or
contextual facts, ... and from underlying facts on which there is conflicting direct evidence but
which the judge must assume may be resolved at trial in favor of the nonmoving patty. ")
(citations omitted).
Page 2- OPINION AND ORDER
phrase and encouraging celebrities to publicize it. He continued these efforts for years. 2 In
February 2004, he also began adveliising WE NOT ME in a local monthly publication with a
circulation of 35,000 called "Positively Naperville," and continues his monthly advertisements
there to date. ld at ~Il. In March 2004, Bobosky hired a law firm to apply for federal copyright
and state and federal trademarks for the phrase, making his first trademark application in August
2004. ld at ~12. In November 2004, Bobosky incorporated We Not Me, Ltd. in Illinois, a
business with the goal of advertising "WE NOT ME" for sale or licensing.ld at ~13. He created
a website soon after - www.wenotme.us - which has remained online since then, and which
currently sells WE NOT ME merchandise. ld at ~~, 15,32.
II.
Trademark Registrations
adidas' motion focuses on Bobosky's two federally registered trademarks for "WE
NOT ME"- U.S. Trademark Registration No. 3,118,177 (the '" 177 Registration") and U.S.
Trademark Registration No. 3,742,940 (the '''940 Registration").
A.
'177 Registration
On August 31, 2004, Bobosky submitted his first application to register the phrase
"WE NOT ME" under the intent-to-use provisions of §1(b) of the Lanham Act, 15 U.S.c. §
2 In 2001 and 2002, Bobosky distributed several hundred key chains. In 2003 he
encouraged Oprah Winfrey and Regis Philbin to embrace the message. ld at ~~7-9. In 2004,
2005, and 2007, he distributed over ten thousand beer cups bearing the phrase at the Naperville
Oktoberfest. ld at ~~13,20. In 2005 he distributed over 60 caps to Rotarians at a convention in
Chicago. In April and May 2006, he bought lapel pins, money clips, key chains, and golf ball
markers to sell. [d. at ~~21,22. That summer he also distributed hundreds of lapel pins to
community businesses and ordered more items, including caps and necklaces for sale at the
"Positively Naperville" store. ~~23,24. He also sent letters to non-profits, businesses, and
celebrities such as the board of Wal-Mart, Bill and Melinda Gates, and Michael Moore. Bobosky
even commissioned a song to be written entitled "WE NOT ME."
Page 3- OPINION AND ORDER
1051(b).3 (Feldman Decl., #141, Ex. F.) Bobosky's application asserted a bona fide intention to
use the mark in commerce on or in connection with the following list of goods in International
Class 25:
men's, women's and children's clothing, namely, sweatshirts, sweatpants, shirts, tank
tops, jeans, jackets, coats, slacks, suits, hats, headbands, visors, caps, dresses, shoes,
sneakers, boots, wristbands, socks, t -shirts, belts, belt buckles, undergmments,
neckties, dress shirts, collared shirts, lUbgy [sic1shirts, ties, knit shirts, shorts and
sandals.
(Feldman Decl., #141, Ex. F, at 4.) Additionally, the application appointed attorney John
3 Section 1(b) provides:
(1) A person who has a bona fide intention, under circumstances showing the
good faith of such person, to use a trademark in commerce may request
registration of its trademark on the principal register hereby established by paying
the prescribed fee and filing in the Patent and Trademark Office an application
and a verified statement, in such form as may be prescribed by the Director.
(2) The application shall include specification of the applicant's domicile and
citizenship, the goods in connection with which the applicant has a bona fide
intention to use the mark, and a drawing of the mark.
(3) The statement shall be verified by the applicant and specify-(A) that the person making the verification believes that he or she, or the
juristic person in whose behalf he or she makes the verification, to be
entitled to use the mark in commerce;
(B) the applicant's bona fide intention to use the mark in commerce;
(C) that, to the best of the verifier's knowledge and belief, the facts recited
in the application are accurate; and
(D) that, to the best ofthe verifier's knowledge and belief, no other person
has the right to use such mark in commerce either in the identical fOlm
thereof or in such near resemblance thereto as to be likely, when used on
or in connection with the goods of such other person, to cause confusion,
or to cause mistake, or to deceive.
15 U.S.C. § 1051(b).
Page 4- OPINION AND ORDER
Ambrogi- Bobosky's intellectual property counsel- to submit the application on his behalf. Id.
Ambrogi prepared the list of goods included in the application and signed the application on
behalf of Bobosky. Id. at 5; (Feldman Dec!., #141, Ex. B, at 2,3). In fact, Bobosky never
specifically asked for a registration as to "each and everyone" ofthe goods; he assumed that "it
just comes with the territory" and that the patent and trademark office had "thow[n1them in the
class." (Feldman Dec!., #141, Ex. B, at 4,5.)
On April 3, 2006, Bobosky's attorney filed a Statement of Use, as required by §1(d),
asserting that mark WE NO ME had been first used in commerce "at least as early as" October
2004 and was currently in use in commerce. (Feldman Dec!., #141, Ex. I, at 3.) He also
submitted a specimen showing the mark as it was used: a picture of a hat with the phrase "WE
NOT ME" embroidered on the back. Id. at 5. Finally, he attested that Bobosky was using the
mark in commerce on or in connection with "all goods andlor services" listed in his application.
In depositions for this case, Bobosky admitted that, in fact, he was not using the mark
in commerce in connection with all the goods listed in his application when the Statement of Use
was submitted in April 2006. (Feldman Dec!., #141, Ex. B at 9.) Moreover, Bobosky admitted
that he first used WE NOT ME on hats in May 2005, not October 2004 as suggested by the
Statement of Use, although the mark was in use on pins and key chains by 2004. (Feldman
Dec!., #141, Ex. A at 4, Ex. B at 15.) Bobosky noted, however, that Mr. Ambrogi filed the
Statement of Use on his behalf and that Ambrogi made the false statement concerning the extent
of use without his knowledge. Id. Bobosky was also unclear about whether Ambrogi knew the
Statement of Use contained false asseliions when he submitted it. Id. In July 2006, the USPTO
issued the' 177 Registration.
Page 5- OPINION AND ORDER
In November and December 2007, a different attorney representing Bobosky, John
Sopuch, contacted adidas claiming that adidas' use of the phrase "We Not Me" in a basketball
marketing campaign violated both a copyright Bobosky possessed for the poem entitled "We Not
Me" and Bobosky's trademark of that phrase. (Backman Decl., #140,
~~4,5.)
adidas' in-house
intellectual property counsel researched Bobosky' '177 Registration and could not find any use
of the mark by Bobosky or his company on any of the goods listed in the Statement of Use,
except on baseball caps. Jd at ~7. Consequently, adidas' counsel told Bobosky's attorney that
her investigation showed Bobosky' statement of use contained false assertions and threatened to
challenge the validity of the We Not Me mark if Bobosky did not drop his allegations of
trademark infringement. Jd at ~8. After that conversation, Bobosky discussed amending his
trademark registration with his attorney and ultimately submitted a Post-Registration amendment
in March 2008, removing all items except hats from the recitation of goods. (Feldman Decl.,
#141, Ex. B at 11, 12, Ex. J.) Bobosky confilmed that he amended his registration only after
adidas accused him of perpetrating a fraud on the trademark office. (Id; Ex. B at 13-14.)
B.
'940 Registration
In Mm-ch 2008, Bobosky's attorney filed for a second trademark application, also
under the intent-to-use provision, asseliing a bona fide intent to use WE NOT ME" in connection
with "hats, clothing, namely, shitis, and footwear" in International Class 25. Bobosky filed this
second application to "protect [himself! in other areas ... clothing and footwear" because he
predicted adidas or another company would try to use WE NOT ME in those areas. (Feldman
Decl., #141, Ex. B at 16.) As of his March 2908 application, Bobosky testified that he generally
planned to "apply the trademark to all levels of clothing, from top to bottom, hats, to clothes on
Page 6- OPINION AND ORDER
the body, to their feet that they walk in," yet Bobosky had no specific plans to create We Not Me
footwear or clothing products. Id at 17-18.
In November 2009, Bobosky's attomey filed a Statement of Use connected to the
March 2008 application declaring that WE NOT ME had been in use since October 2004 with
hats and since October 7, 2009 with shirts and footwear. (Feldman Decl., #141, Ex. J at 4.) Also
included were copies of pages from a website selling WE NOT ME apparel, including hats, tshirts, and flip-flop sandals. Id. at 6-13. On the basis of the Statement of Use, the PTO granted
Bobosky's application for the '940 Registration in January 2010.
LEGAL STANDARDS
Summmy judgment is appropriate "ifthe pleadings, depositions, answers to
inte11'0gatories, and admissions on file, together with the affidavits, if any, show that there is no
genuine issue as to any material fact and that the moving party is entitled to a judgment as a
matter oflaw." Fed. R. Civ. P. 56(c). Summmy judgment is not proper if material factual issues
exist for trial. See, e.g., Celotex Corp. v. Catrett, 477 U.S. 318, 322 (1986); Anderson v. Liberty
Lobby, Inc., 477 U.S. 242,248 (1986); Warren v. City a/Carlsbad, 58 F.3d 439,441 (9th Cir.
1995), cert. denied, 116 S.C!. 1261 (1996). In evaluating a motion for summmy judgment, the
district courts of the United States must draw all reasonable inferences in favor of the nonmoving
party, and may neither make credibility determinations nor perform any weighing ofthe
evidence. See, e.g., Lytle v. Household },;f/g., Inc., 494 U.S. 545, 554-55 (1990); Reeves v.
Sanderson Plumbing Products, Inc., 530 U.S. 133, 150 (2000).
DISCUSSION
adidas moves for summary judgment on Bobosky's claims for trademark
Page 7- OPINION AND ORDER
infringement and unfair competition under the Lanham Act arguing that because Bobosky's
federal trademark registrations are both void ab initio and invalid by viliue of being procured
through fraud on the PTO, Bobosky lacks a valid and enforceable trademark in WE NOT ME.
adidas also contends that Bobosky has no rights in WE NOT ME as an unregistered trademark
because he failed to use the mark in a trademark manner, that is, to identify the source of his
products. Because I find that Bobosky's federal registrations are void ab initio, I grant summary
judgment for adidas on Bobosky's trademark infringement claim under §32 of the Lanham Act
and therefore decline to address adidas' allegations of fraud on the PTO." I also conclude,
however, that there remains a genuine issue of material fact as to whether Bobosky acquired
valid and protectable rights in WE NOT lYlE mark through trademark use. Therefore, I deny
adidas' motion for summary judgment on Bobosky's unfair competition claim under § 43(a) of
the Lanham Act.
I.
Validity of Federal Trademark Registrations
A.
VoidAb Initio
adidas raises what amounts to three distinct void ab initio arguments. First, adidas
contends that Bobosky's '177 and '940 registrations are void ab initio because Bobosky lacked
the bona fide intent to use WE NOT ME on all the goods listed in his initial intent-to-use
applications. Second, adidas argues that the' 177 registration is void ab initio because Bobosky
adidas' arguments of void ab initio and fraud on the PTO would also support its
counterclaim for cancellation ofBobosky's federal registrations pursuant to 15 U.S.C. § 1119.
However, adidas does not move for summary judgment on that counterclaim and even suggested
previously that it would voluntarily dismiss its counterclaim if it prevailed on its motion for
partial summaty judgment. Thus, the issue of whether Bobosky's federal registrations should be
cancelled is not properly before the court at this juncture and will be taken up later if necessaty.
4
Page 8- OPINION AND ORDER
failed to actually use all the goods in commerce, as attested in his Statement of Use filed in April
2006. Third, adidas contends that the' 177 and '940 registrations are void ab initio because
Bobosky misstated the first use date for WE NOT ME in the Statements of Use for both his
registrations. Because I agree with adidas' s first argument - that Bobosky lacked the requisite
bona fide intent to use his mark in commerce - I need not consider the others.
1.
Lack of Bona Fide Intent to Use Mark in Commerce on
All Items as Asserted in Initial Applications for '177 and
'940 Registrations
adidas contends that Bobosky's '177 and the '940 registrations are void ab initio
because Bobosky lacked the bona fide intent to use WE NOT ME on all the goods listed in his
initial intent-to-use applications. A bona fide intent to use the mark in commerce is a statutOlY
requirement of a valid intent-to-use trademark application under § 1(b) of the Lanham Act. See
15 U.S.C. § 1051(b)(1) ("person who has a bona fide intention, under circumstances showing the
good faith of such person, to use a trademark in commerce may request registration of its
trademark on the principal register"); Aktieselskabet AF 21. November 2001 v. Fame Jeans Inc.,
525 F.3d 8, 21 (D.C. Cir. 2008). Section l(b) requires both actual intent to use the mark in
commerce and evidence that objectively demonstrates such an intent. Aktieselskabet, 525 F.3d at
21 (citing Wet Seal, Inc. v. FD JvIgmt., Inc., 82 U.S.P.Q.2d 1629, 1633 (T.T.A.B. 2007) and
Commodore Elecs. Ltd. v. Cbm Kabushiki Kaisha, 26 U.S.P.Q.2d 1503, 1507 (T.T.A.B. 1993)).
An applicant's subjective testimony about his state of mind cannot demonstrate that
he possessed a bona fide intent to use the mark. Lane Ltd. v. Jackson Int'l Trading Co., 33
U.S.P.Q.2d 1351,1355 (1994) (an "applicant's mere statement of subjective intention, without
Page 9- OPINION AND ORDER
more, would be insufficient to establish applicant's bona fide intention to use the mark in
commerce"). Typically, an applicant demonstrates his bona fide intent to use by producing "a
written plan of action" for a new product or service. 3 J. Thomas McCarthy, k1cCarthy on
Trademarks and Unfair Competition,§ 19:14, at 19-46, 47 (4th ed. rev. 2011) ("lv1cCarthy"). If
there is an absence of documentary evidence showing the applicant's intent to use the mark, the
burden shifts to the applicant to adequately explain that lack of documentaty evidence.
}v1cCarthy, § 19:14, 19-47; Boston Red Sox Baseball Club Ltd P'ship v. Brad Francis Sherman,
88 U.S.P.Q.2d 1581, 1587 (2008). By itself, the absence of contemporaneous documents
indicating an intent to use is sufficient to prove an applicant's lack ofbona fide intent. See
Commodore, 26 U.S.P.Q.2d at 1507.
A lack of bona fide intent to use is a ground for an inter partes opposition proceeding
to an application before the Trademark Board. Aktieselskabet, 525 F.3d at 21; McCarthy §
20:21, at 20-65,66. Lack of bona fide intent to support an intent-to-use application also may
render an application void ab initio upon challenge in federal district court. See Caesars World,
Inc. v. ,\;filanian, 247 F. Supp. 2d 1171,1192-93 (D. Nev. 2003) ("Milanian's intent to use
applications for COLOSSEUM and EMPIRE were not made with a bona fide intent to use and
are void.")
Here, I find that Bobosky lacked a bona fide intent to use his mark in commerce on
each item, including hats, listed in his first intent-to-use application. Since Bobosky amended his
, 177 registration to remove all items except hats, the only relevant inquily is whether Bobosky
intended to use the mark on hats at the time of his initial August 2004 application. Since
Bobosky admits in depositions that he did not even create the list of goods appearing in that
Page 10- OPINION AND ORDER
application, he effectively concedes that he lacked the bona fide intent to use WE NOT ME on
each of those items, including hats. Accordingly, I conclude that Bobosky's '177 registration of
WE NOT ME for use on hats is void ab initio.
The analysis for Bobosky's second intent-to-use application is slightly more
complicated, but reaches the same result. In that application dated March 19,2008, Bobosky
asselted through his attomey a bona fide intent to use WE NOT ME on hats, shirts, and footwear.
It is undisputed that Bobosky actually used WE NOT ME on hats in May 2005, placing an order
for 144 hats from Minuteman Press on May 5,2005. (Feldman Dec!., #141, Ex. B at 15.) Thus,
there is no question that Bobosky possessed the requisite intent to use the mark as to hats.
Bobosky, however, offers conflicting testimony about his intent to use the mark on shilts and
footwear. Bobosky testified that as of March 2008 he had "[n]o plans" to create WE NOT ME
clothing or footwear because he had "[n]o need to," since he had not yet acquired a trademark.
Id at 18. Yet he also stated that prior to his March 2008 application he had called two
companies about producing WE NOT ME clothing and footwear, but did not receive written
price quotes or proposals from them. Id at 19. In light of this contradictory testimony,
'Bobosky's attempt to explain why he lacked documentmy evidence of his intent to use the mark
on shirts and footwear is insufficient to cany his burden on that issue. See Basion Red Sox, 88
U.S.P.Q.2d at 1587 (rejecting applicant's explanation for his lack of documentmy evidence of
bona fide intent as "simply not credible"). Therefore, I conclude that Bobosky did not possess a
bona fide intent to use his mark on shirts and footwear as asserted in his March 2008 application.
A recent lUling of the Trademark Board indicates that proof of a lack of bona fide
intent to use even one item in a class of goods on an intent-to-use application invalidates the
Page 11- OPINION AND ORDER
application for that entire class.' See Spirits Int'!, B. v: v. S.s. Taris Zeytin Ve Zeytinyagi Tarim
Satis Kooperatijleri Birligi, 99 u.S.P.Q.2d 1545, 1549, 1550 n.3 (201l) ("to the extent that
opposer is successful in proving ... lack of a bona fide intention to use the mark with respect to
any of the goods in each class ... the opposition against the classes in their entirety would be
sustained."). Thus, Bobosky's '940 registration as a whole is void ab initio because he lacked
the bona fide intention to use his mark on two out ofthree items within Intemational Class 25
listed on that application.
II.
Validity of Unregistered Trademark
Even though I agree with adidas that Bobosky's federal registrations are both void ab
initio, I must further analyze whether Bobosky has acquired a valid unregistered trademark.
Possession of a federally registered trademark is not required to succeed in an action under §
43(a) of the Lanham Act, one of the two claims brought by Bobosky. As the Ninth Circuit
recently explained, failure to provide evidence of a federal registration for a trademark, "while
, This rule stands in tension with Grand Canyon West Ranch LLC v. Hualapi Tribe, 78
U.S.P.Q.2d 1696, 1697 (T.T.A.B.l985), holding that, absent proof offraud, a false statement of
use for a use-based will invalidate the registration for only the items not actually used in
commerce, not that entire class of items. Indeed, cases of the Board predating Spirits
International extend the more forgiving Grand Canyon rule to intent-to-use applications as well.
See, e.g. Wet Seal, Inc. v. FD lvfgmt., Inc., 82 U.S.P.Q.2d 1629,2 (OPPOSITION 91157002)
("An [intent-to-use] application will not be deemed void for lack ofa bona fide intention to use
absent proof of fraud, or proof of a lack of bona fide intention to use the mark on all of the goods
identified in the application, not just some of them"). The Board in Spirits International
apparently recognized that tension, and briefly distinguished Grand Canyon as a case where the
applicant affirmatively moved to amend its identification to remove the challenged items. 99
U.S.P.Q.2d 1545, 1550 n.3. I do not find this distinction particularly compelling nor can I
disc em a policy rationale for construing an intent-to-use application so much more strictly
against the applicant than a use-based application. However, since Spirits International is the
most recent precedential opinion of the Board on this issue, I afford it persuasive weight.
Page 12- OPINION AND ORDER
detrimental to [plaintiff's] trademark claim, does not completely resolve it." Fleischer Studios,
Inc. v. A. V.E.L.A., Inc., 654 F.3d 958, 966 (9th Cir. Aug. 19,2011). That is because a claim
under § 43(a) requires only proof of a "valid, protectable trademark," not necessarily afederally
registered trademark. Brookfield, 174 F.3d at 1046, 1047 n.8 ("Whereas section 32 provides
protection only to registered marks, section 43(a) protects against infringement ofumegistered
marks and trade dress as well as registered marks"). Pursuing a § 43(a) claim, "a claimant may
still prove the validity of an unregistered mark" but must do so without "the presumption of
validity that registration confers."6 Id.
A.
Trademark Use
The parties dispute whether Bobosky has actually used WE NOT ME in a trademark
manner. adidas insists that Bobosky used WE NOT ME on hats, shhis, and flip-flops as mere
decoration and ornamentation, while Bobosky contends that WE NOT ME serves the trademark
purpose of identifying We Not Me, Ltd. as the source of those items. 7
In general, one must use a mark in order to acquire trademark rights. See Hanover
6 Federal registration provides "prima facie evidence" of the mark's validity and entitles
the plaintiff to a "strong presumption" that the mark is a protectable mark. Zobmondo Entm't,
LLC v. Falls ,vfedia, LLC, 602 F.3d 1108, 1113 (9th Cir. 2010) (citing 15 U.S.c. §§ 1057(b),
1115(a); KP Permanent },fake-Up, Inc. v. Lasting Impression 1, Inc., 408 F.3d 596, 604 (9th Cir.
2005».
7 adidas focuses only on Bobosky's use of WE NOT ME on t-shirts, hats, and flip-flops,
the uses described in his amended' 177 registration and his '940 registration. In addition to those
items, it appears Bobosky produced WE NOT ME pins, money clips, golf ball markers, and
jewelry to sell. Thus, he argues that even if his use of WE NOT ME was ornamental on shirts,
hats, and sandals, it might not have been on the other items. Bobosky, however, does not
produce any evidence showing how his mark was actually displayed on those other items. I
therefore consider only whether his use of WE NOT ME on hats, shirts, and sandals served a
trademark purpose.
Page 13- OPINION AND ORDER
Star ,);filling Co. v. Metcalfe, 240 U.S. 403 (1916). But, as Professor McCatihy teaches, "not
evelY single work, phrase, design
01'
picture that appears on a label
01'
in an advertisement
qualifies as a protectable mark 01' trade dress." McCarthy, §3 :3, at 3-6. Rather, only use of a
mark to identify the goods as coming from a celiain source and distinguish it from other sources
qualifies as trademark use. See 15 U.S.C. § 1127 (defining trademark as "any word, name,
symbol, 01' device, or any combination thereof," which serves "to identify and distinguish [the]
goods [of the mark's owner) ." from those manufactured or sold by others and to indicate the
source of the goods, even if that source is unknown."); MicroStrategy Inc. v. Motorola, Inc., 245
F.3d 335, 342 (4th Cir. 2001) (holding that if the designation does not perfOlm the job of
identification, then it is not protectible as a trademark); McCarthy, §3:3, at 3-6, § 16:1 at 16-5,6.
Such trademark use is required to prove both trademark infringement of a registered mark and
unfair competition based on an unregistered trademark. See Rock & Roll Hall ofFame &
Museum, Inc. v. Gentile Prods., 134 F.3d 749, 753 (6th Cir. 1998) ("whether alleging
infringement of a registered trademark, pursuatlt to 15 U.S.C. § 1114(1), or infringement of an
unregistered trademark, pursuant to 15 U.S.C. § 1125(a)(I), it is clear that a plaintiff must show
that it has actually used the designation at issue as a trademark").
Merely because a design, symbol, or designation is decorative or ornamental does not
mean that it cannot also serve the trademark purpose of identifying the source of the goods that
bear it. McCarthy, § 7:24, at 7-57. Indeed, as one comi observed, "[w]ords can, in some
situations, serve both an ornamental and a trademark function," Ithaca Indus., Inc. v. Essence
Comll1c'ns, Inc., 706 F. Supp. 1195, 1206-207 (W.D.N.C. 1986). But, if a designation is solely
ornamental, it cannot be a trademark. Go Pro Ltd. v. River Graphics, Inc., 2006 WL 898147, at
Page 14- OPINION AND ORDER
*4 (D. Colo. Apr. 5,2006) (citing lvfcCarthy, § 7:24). Whether a plaintiff uses a designation
merely as ornamentation or also to indicate origin is a question of fact. See Application of
}.;iogen David Wine Corp., 328 F.2d 925, 932 (Cust. & Pat. App. 1964) (whether bottle design
functioned as trademark to indicate origin was a question of fact); In re Tilcon Warren, Inc., 221
U.S.P.Q. 86, 88 (1984) ("the determination of whether subject matter for registration serves or
does not serve to indicate origin is a fact question").
In oral argument, adidas contended that Bobosky's embroidering of WE NOT ME
onto shirts and hats bearing the labels of the other companies that manufactured those items was
completely omamental and could never qualify as trademark use. adidas claimed that, as a
matter of law, the only way one can properly use a trademark on a shirt or similar item is by
placing that mark on the item's label or associated hang tag, unless the owner ofthe mark is a
company so well-know that a vast number of consumers already associated it with the mark.
adidas provides no authority to support this position, either in briefing or during argument, and I
find it to be completely at odds with the leading cases to address the issue.
It is well-established that even use of a mark as omamentation on apparel
manufactured by others qualifies as trademark use as long as the mark also serves the trademark
purpose of identifying the source of the product. The Board first clearly articulated this principle
in In re Olin Corp., 181 U.S.P .Q. 182 (1973), a case where plaintiff sought to register a stylized
"0" for use on t-shilts, but registration was refused on the basis that the mark was used as mere
omamentation. On appeal, the Board recognized that marks ornamenting t -shilts, even those
manufactured by others, can also serve a trademark function by identifying the item's "secondary
source":
Page 15- OPINION AND ORDER
It is a matter of common knowledge that T-shirts are "ornamented" with various
insignia, including college insignias, or "ornamented" with various sayings such as
"Swallow Your Leader". In that sense what is sought to be registered could be
construed to be ornamental. If such ornamentation is without any meaning other than
as mere ornamentation it is apparent that the ornamentation could not and would not
serve as an indicia of source. Thus, to use our own example, "Swallow Your Leader"
probably would not be considered as an indication of source.
The "ornamentation" of a T -shilt can be of a special nature which inherently tells the
purchasing public the source of the T-shirt, not the source of manufacture but the
secondary source. Thus, the name "New York University" and an illustration of the
Hall of Fame, albeit it will serve as ornamentation on a T-shirt will also advise the
purchaser that the university is the secondmy source of that shirt. It is not imaginable
that Columbia University will be the source of an N.Y.U. T -shilt. Where the shirt is
distributed by other than the university the university's name on the shirt will indicate
the sponsorship or authorization by the university.
!d. at 182. Consequently, the Board concluded that because the stylized "0" both ornamented
the applicant's shirts and served as "an indication of a secondmy source of origin," the symbol
functioned as a trademark. Id. at 182-183.
The Board has also extended this holding to words used on t-shirts, relying on the
same notion that a mark can simultaneously ornmnent and identify source. In In re Expo '74, 189
U.S.P.Q. 48 (T.T.A.B. 1975), Expo '74, a corporation organizing the 1974 World's Fair in
Spokane, Washington, applied to register the mark EXPO '74 for use across the front oft-shirts
manufactured by another entity. Id at 48. The registration was refused because the shirts did not
use the phrase EXPO '74 in a trademark manner. Id. at 49. The Board first reiterated that a
trademark may be affixed to goods manufactured by others:
There is no question that a party is not required to manufacture products to own and
register a trademark. In fact, any person in the normal channels of distribution
including a manufacturer, a contract purchaser who has goods manufactured for him,
and a retailer or merchant as well as any nonprofit organizations or institution can be
the owner of a trademark "in commerce" ifhe applies or has someone in his behalf
Page 16- OPINION AND ORDER
apply his own trademark to goods to which he has acquired ownership and title and
sells or merely transports such goods in commerce as his own product with the mark,
as applied thereto, serving to identify the particular product as emanating from the
shipper or seller in his own capacity.
Iel The Board then explained that there is no "prescribed method or place for affixation of a
mark to goods," and that even affixing a mark across the front of a gmment, as Expo' 74 did on
its shirts, could serve as trademark use so long as the mark "performs the function of a trademark
by signifying to purchasers and prospective purchasers the goods of a particular entity and
distinguishing such goods from those of others."s Id. at 49. Relying heavily on its prior analysis
in Olin, the Board reversed refusal of the registration because the use of EXPO '74 on the front
of t -shirts indicated the origin of those goods. Id.
The Board has since reiterated this principle in In re Paramount Pictures Corp., 213
U.S.P.Q. 1111 (T.T.A.B.1982), holding that the words "Mork & Mindy" appearing below a
design were not merely ornamental on t-shirts because they indicated a secondary source of
sponsorship, the television show Mork & Mindy, not the manufacturer of the shirts. Many
authorities continue to cite Paramount Pictures for the proposition that a mark can identify a
secondary source of the product in addition to ornamenting it. See, e.g., Go Pro Ltd., 2006 WL
898147, at *4; In re Watkins Glen Int'!, Inc., 227 U.S.P.Q. 727, 728 (1985); Trademark Man. of
Exam. Proc. § 1202.03 (8th ed. 2011) ("TMEP").
When the court asked adidas during oral argument whether placing a mark on a shirt
Thus, adidas' insistence that a mark may serve a source-identifying function only when
affixed to a shirt's label or hang tag seems to ignore this explicit language of the Board in Expo
8
'74.
Page 17- OPINION AND ORDER
manufactured by another could serve to identify the "secondary source" of the shirt, adidas
responded somewhat disdainfully that it did not even understand the court's question because it
knew of no such concept in trademark law. adidas can no longer remain ignorant of this wellestablished principle. As the foregoing discussion demonstrates, the fact that Bobosky
embroidered WE NOT ME in various places on t-shhis and hats bearing the labels of other
companies does not necessarily mean that he used WE NOT ME solely as ornamentation.
Here, Bobosky contends that because WE NOT ME c011'esponds with the corporate
name of We Not Me, Ltd., use of WE NOT ME on apparel in fact indicates the secondary source
of those goods. Case law is mixed on this issue. In In re Paramount Pictures Corp., 217
U.S.P.Q. 292 (1983), the Board implicitly endorsed the notion that a mark consisting of a
corporate name or logo is used as a secondary source indicator rather than as mere
ornamentation. Id. at 294, n. 6 (citing Olin, Expo '74, and In re Penthouse International Ltd.,
195 U.S.P.Q. 698 (C.C.P.A. 1977)). Nevertheless, the Board rejected the same argument in a
case decided the next year. See In re Astra-Gods Inc., 223 U.S.P.Q. 621,623 (1984) ("Applicant
argues, however, that the designation [ASTRO GODS] as used on applicant's T-shirts, would be
perceived by purchasers as a trademark because it corresponds to applicant's corporate and trade
name, Astro Gods, Inc .... [w]e do not find this argument ... to be persuasive"). Accordingly,
the similarity of WE NOT ME and the corporate name We Not Me, Ltd. cannot alone
demonstrate trademark usage to identify a secondary source.
A more useful detelminant of whether a mark is merely ornamental or also serves a
trademark function is what the Trademark Manual of Examining Procedures calls the overall
"commercial impression" of the proposed mark. See TMEP. § 1202.03(a). The Board has
Page 18- OPINION AND ORDER
identified several key factors in evaluating the overall commercial impression of a mark. "Where
... an alleged mark serves as part of the aesthetic ornamentation of the goods, the size, location,
dominance and significance of the alleged mark as applied to the goods are all factors which
figure prominently in the determination of whether it also serves as an indication of origin." In
re Pro-Line, 28 U.S.P.Q.2d 1141, 1142 (T.T.A.B. 1993) (emphasis added); see also TMEP
§1202.03(a) ("The examining attorney must also consider the size, location, and dominance of
the proposed mark, as applied to the goods, to detennine whether ornamental matter serves a
trademark function."). Specifically, "[t]he larger the display relative to the size of the goods, the
more likely it is that consumers will not view the ornamental matter as a mark." In re Greater
Anchorage, Inc., Serial No. 77561929, 2011 WL 810198 (February 14, 2011). Another relevant
factor is whether the mark is used in conjunction with "TM" or another symbol indicating
trademark usage. Cf In re Wakefern Food Corp., 222 U.S.P .Q. 76, 78-79 (T.T.A.B. 1984) ("The
fact that no symbol, such as 'TM' or 'SM,' is used to designate an alleged mark is also some
evidence that the phrase is not being used in a trademark or service mark sense").
In briefing, adidas cited several cases where the Board determined the uses of phrases
or slogans on t-Shilis to be solely ornamental based on analyses of the specific characteristics of
the t-shirts' visual designs. See Go Pro Ltd., 2006 WL 898147 (D. Colo. Apr. 5,2006)
(embroidering of the phrase "Here Fishy, Fishy" over a large fish hook on T-shirts and hats was
merely ornamental); In re Dimitri's Inc., 9 U.S. P.Q.2d 1666 (T.T.A.B.1998) (word "Sumo" on
t-shirts and hats in connection with stylized representations of sumo wrestlers likely to be
perceived as ornamentation); In re Astra-Gods, Inc., 223 U.S.P.Q. 621 (T.T.A.B.1984) ("Astro
Gods" phrase appearing above depictions of deities serves as part of the thematic whole of
Page 19- OPINION AND ORDER
aesthetic ornamentation of t-shirts). In oral argument, however, adidas continually rebuffed the
court's questions about the size, location, and context of WE NOT ME on Bobosky's shirts, hats,
and sandals and about whether those factors suggested the mark functioned as pure
ornamentation or also served a trademark purpose. This, of course, is a critical inquiry.
Starting with Bobosky's shilis, I note the overall commercial impression of
Bobosky's use of WE NOT ME is only incidentally omamental and primarily source-identifying.
In Go Pro, Astra-Gods, and Dimitri's, the challenged phrases or slogans appeared on the frant of
shirts in relatively large font along with corresponding images: "Here Fishy, Fish" with a fish
hook, "Astra-Gods" with a Greek deity, and "Sumo" with a sumo wrestler. These phrases were
prominent and integral parts of the aesthetic omamentation of the shilis. By contrast, here the
phrase WE NOT ME appears in small print on one sleeve ofBobosky's shili without any
corresponding imagery. (Feldman Dec!., #141, Ex. M). In fact, other than a medium-size logo
over the breast, there is no other design on the shirt whatsoever, reinforcing the notion that WE
NOT ME is more likely to function as source identification than aesthetic ornamentation.
Finally, the phrase WE NOT ME on the sleeve is followed by a small "®" symbol, providing
notice that the phrase is a mark that has been federally registered. See 15 U.S.C. §1111. Thus,
there is at least a question of fact regarding whether the "size, location, dominance and
significance" of Bobosky's use of WE NOT ME on t-shilis indicates that the mark serves a
trademark purpose. See Pro-Line, 28 U.S.P.Q.2d at 1142.
The same conclusion also holds for Bobosky's hats. WE NOT ME is found on the
back of the hats, in somewhat larger lettering relative to the size of the hat than it appears on the
t-shirts. (Feldman Dec!., #141, Ex. E.) The frant of the hat bears only the WE NOT ME logo,
Page 20- OPINION AND ORDER
appearing much larger than the phrase on the reverse of the hat. Again, the location of the phrase
and the smaller font size compared to the logo suggests the phrase is source-identifYing as well as
omamenta!.
Bobosky's flip-flops are somewhat different. There, the phrase WE NOT ME
prominently adoms one of two straps on one sandal, while the WE NOT ME logo appears on the
other strap, albeit much smaller. No other markings of any kind appear on the sandals. Since the
phrase takes up a significant amount of the visible display space on the flip-flops and is the only
decoration on an otherwise plain sandal, it appears to function merely as omamentation.
Consequently, there is no triable issue conceming whether WE NOT ME is used in a trademark
manner on Bobosky's sandals.
One tangential issue is whether Bobosky's use of WE NOT ME on hang tags and
other labeling associated with his shirts, hats, and sandals suffices to create a question of fact
regarding whether Bobosky used WE NOT ME to identifY source. See Go Pro, 2006 WL
898147, at *3 (D. Colo. Apr. 5,2006) (use of phrase on labels, invoices, advertisements, order
forms, and hang tags created question of fact conceming whether plaintiff acquired valid
trademark rights under § 43(a». Bobosky admits that he used WE NOT ME on hang tags only
twice for intemet sales in 2009 and 2010. (Feldman Dec!., #141, Ex. B, at 25.) Moreover, he
does not even rely on these tags to demonstrate his acquisition of trademark rights. Thus,
Bobosky's very limited use of tags does not independently indicate source-identifYing trademark
use.
In sum, because Bobosky uses WE NOT ME on shirts and hats in relatively small
font at a secondalY location without accompanying aesthetic content, there is a genuine issue of
Page 21- OPINION AND ORDER
material fact conceming whether the pln'ase also serves to identify We Not Me, Ltd. as the
secondary source ofthose items. Thus, adidas is not entitled to summary judgment on Bobosky's
unfair competition claim based on trademark infringement.
III.
Validity of Trade Name
Bobosky insists that his § 43(a) claim also survives summary judgment based on his
use of WE NOT ME as a trade name. Trade names are symbols used to distinguish companies,
partnerships and businesses, and symbolize the reputation of a business as a whole. Accl/ride
Int'!, Inc. v. Accl/ride Corp., 871 F.2d 1531, 1534 (9th Cir. 1989). The Lanham Act defines trade
names as "individual names and sumames, firm names and trade names used by manufacturers,
industrialists, merchants, agriculturalists, and others to identify their businesses, vocations, or
occupations .... " 15 U.S.c. § 1127. A corporate name is the most common example of a trade
name. See Stork Restaurant v. Sahati, 166 F.2d 348, 352 (9th Cir. 1948); lvfcCarthy § 9:1, at 9-3.
Trade names cannot be registered and are therefore not protected under § 32, but actions for trade
name infringement can be brought under § 43(a). Accl/ride, 871 F.2d at 1534. Since trade names
often function as trademarks, cases usually involve a challenge to both trademark and trade name
usage. Id. Accordingly, courts apply the same legal principles for both trade name and
trademark infringement. Id. at 1535.
The problem with Bobosky's trade name theory in this case is that Bobosky's
operative complaint does not allege that he possesses rights in a trade name, does not identify his
putative trade name, and does not assert that adidas infringed that trade name. Admittedly,
Bobosky Third Amended complaint alleges adidas violated §43(a) of the Lanham Act in part by
"trad[ing] on Plaintiffs' established goodwill .... " (Third Amend. Compi., #101,
Page 22- OPlNION AND ORDER
~63.)
Bobosky's use of the telID "goodwill" is somewhat reminiscent of the trade name concept, since
a business' goodwill is often tied to its name. But the complaint nowhere uses the words "trade
name" and exclusively refers to adidas' infringement of the WE NOT ME "mark." Since
Bobosky has not moved to amend his complaint to allege trade name infringement as a basis for
his unfair competition claim, I am not prepared to decide whether Bobosky might be entitled to
amend to state such a claim.
CONCLUSION
For the foregoing reasons, defendants' motion for partial summary judgment (#138) is
granted in part and denied in pmi. Although Bobosky's federal trademark registrations are void
ab initio, there remains a genuine issue of material fact concerning whether Bobosky has
established valid rights in WE NOT ME as an umegistered trademark through use of the mark on
shhis and hats to identify their secondary source.
~y of December, 2011.
Dated thisli
[~
)
\ad I4d?
C
Honorable Paul Papak
United States Magistrate Judge
Page 23- OPINION AND ORDER
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